If you filed a federal trademark application listing “Tequila” in the identification of goods and services recently, you probably received an office action from the U.S. Patent and Trademark Office (USPTO) with the following notice:

The wording “TEQUILA” was previously included in the USPTO’s U.S. Acceptable Identification of Goods and Services Manual. On June 20, 2017, however, the USPTO registered the certification mark TEQUILA for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” Therefore, the wording “TEQUILA” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; seeCamloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See the attached U.S. Registration No. 5225126.

Almost 14 years after it filed its application to register TEQUILA as a certification mark, Consejo Regulador del Tequila, A.C. (CRT), a Mexican nonprofit civil association that includes agave producers, producers/manufacturers, bottlers and distributors of Tequila, and representatives of the Mexican government, finally obtained U.S. Registration No. 5,225,126 on June 20, 2017. The registration followed an almost eight-year battle before the Trademark Trial and Appeal Board (TTAB) with Luxco, Inc, a U.S. importer, bottler, producer, and marketer of alcohol products. In its opposition, Luxco claimed, inter alia, “Tequila” is a generic term, over which CRT lacked control, and fraud. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 U.S.P.Q.2d 1477 (T.T.A.B. 2017). The TTAB dismissed Luxco’s opposition in a decision issued on January 30, 2017.

According to CRT’s registration, the certification mark:

certifies that (1) the goods are manufactured in Mexico from a specific variety of the blue agave plant grown in certain regions of Mexico as defined by Mexican law and standards; (2) the goods are manufactured in Mexico in compliance with Mexican law and standards including fermentation, distillation, aging, the percentage of blue agave sugars and physical- chemical specifications; and (3) the finished product is or contains within it the goods manufactured in accordance with (1) and (2) above.

U.S. Registration No. 5,225,126.

Because TEQUILA is now a registered certification mark, examining attorneys are required to advise applicants that list “Tequila” in their identification of goods or services that they must delete that term and replace it with generic wording. TMEP §1402.09. A review of several USPTO actions reveals its current practice is to advise applicants to replace “Tequila” with the generic name “distilled blue agave liquor.”

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.